Patents May Not Be What You Thought They Were: Ask a Caveman

Launch Lab EIR and patent expert Dr. Carol Miernicki provides patent guidance.

The most common misconception about the intellectual property right called a “patent” is that it gives the patentholder the right to do something. Actually, it does not give the patentholder the right to do something – rather it gives him or her the right to exclude others from doing something. That is why a patent is called an exclusive right.

Did you just find that paragraph confusing? Okay, let me start over. A patent is a limited-term monopoly granted by the government to inventors that allows them to exclude others from making, using or selling the invention covered by the patent. The patent monopoly is granted when the government has found the invention to be useful, and to be new and non-obvious relative to all the previously known publications and work in that discipline. So, why can’t the patent holder necessarily practice his/her own useful, new, non-obvious invention? Because there may be a previous patent – owned by someone else – that excludes him/her from doing so! That is, patentability does not mean non-infringement. The Patent Office of a particular country only decides the former. The latter can only be decided in a court of law.

Here is my favourite example which illustrates the difference between patentability and non-infringement: Imagine, at the dawn of time, a caveman who invents “means for sitting thereupon comprising: a seat, and fixedly attached to said seat, three legs.” In other words, the caveman has invented a stool that he can sit on when he cooks his meat before the fire. Undoubtedly useful. And since it is the dawn of time (notice how I cleverly worked that in?), also new and non-obvious relative to everything that came before this invention. So the caveman applies for a patent (it is a strange society that we have imagined), and it is granted.

Several years later, a cavewoman comes along who recognizes an important unsolved problem; namely, one’s back gets tired when using a stool. So, she invents a chair, or as her patent professional writes, “means for sitting thereupon comprising: a seat; and fixedly attached to said seat and projecting downwardly therefrom, four legs; and fixedly attached to a side of said seat and projecting upwardly therefrom, a back.” Eureka! The Patent Office also grants a patent for her new invention.

Now, the question is, can the cavewoman make, use, or sell her newly patented invention? And the answer is, if the caveman’s patent has not yet expired, no, she cannot do so without infringing that earlier patent. The caveman needs to grant her a license to make, use or sell any product covered by his patent, whether or not that product is covered by its own patent. In the absence of a license, the cavewoman should not make, use or sell the chair until the caveman’s patent for the stool expires.

Now, you say, but the chair also has a fourth leg and a back! Yes, indeed, and that is why the chair was patentable. But the chair has the seat and three legs claimed in the prior patent — regardless of whether it also has 12 legs, arms, upholstery, buttons, bells, whistles…. The chair infringes the stool patent by having a seat and three legs.

I hope this clarifies for you this most common misconception concerning patents. And maybe someday we can talk about the other common misconceptions….